The Federal Circuit affirmed the Patent Trial and Appeal Board in Google LLC v. Valtrus Innovations Ltd., No. 2024-1945 (Fed. Cir. Oct. 19, 2026) (precedential), an appeal from IPR2022-01545. Circuit Judge Cunningham wrote for a panel that also included Circuit Judge Hughes and District Judge Allison D. Burroughs of the District of Massachusetts, sitting by designation (Op. 2).

Antedating a reference filed five weeks earlier

The '704 patent claims methods and computer-readable memory for merging search-result lists from multiple search engines (Op. 2-3). All four of Google's obviousness grounds relied on U.S. Patent No. 6,711,569 (Bushee), filed July 24, 2001, about five weeks before the application for the '704 patent was filed on August 27, 2001 (Op. 3). Because that application was filed before March 16, 2013, the pre-AIA version of 35 U.S.C. 102 applied (Op. 4 n.7). The Board found that the inventors conceived of the claimed invention before Bushee's filing date and were diligent until the application was filed, so Bushee was not prior art under pre-AIA 35 U.S.C. 102(e), and it held that Google had not shown any of claims 1-23 unpatentable (Op. 4).

Word metadata as corroboration

An inventor's testimony of conception must be corroborated by evidence beyond the inventor's own statements and documents (Op. 6). Google argued that a co-inventor's declaration, the original invention disclosure documents, and the documents' metadata all came from that inventor and could not corroborate him (Op. 5-7). The court disagreed. Assuming without deciding that the metadata was authentic, it held that metadata generated by Microsoft Word was not authored by the inventor and can independently corroborate inventor statements and documents in Word files, following Global Health Solutions LLC v. Selner, 148 F.4th 1363 (Fed. Cir. 2025). The court said the metadata is not like unwitnessed laboratory notebooks or unwitnessed emails and drawings, and found its authorship and timestamp information consistent with the conception date in the declaration (Op. 7-8).

Eleven business days of diligence

Google disputed diligence only from August 8 to August 27, 2001, a period it described as about 11 business days (Op. 9). The court held that substantial evidence supported the Board. The last of the four inventors to sign the inventor declaration was in Ontario, Canada, and signed on August 8, so the declaration had to travel by mail to the law firm's California offices, and Valtrus's expert testified that law firms take several weeks or more to draft and finalize an application (Op. 9-10). The court distinguished In re Mulder, 716 F.2d 1542 (Fed. Cir. 1983), where a draft application had been prepared for nearly three months and the record showed no activity of any kind in this country, and noted that diligence must be reasonably continuous, not perfectly continuous (Op. 10). The judgment reads "AFFIRMED" (Op. 11).